Legal Review of Patent Rights with the License Agreement on Civil

Law

Tasya Safiranita Ramli

, Sherly Ayuna Putri

, Ahmad M. Ramli

Department of Technology Information Communication and Intellectual Property, Faculty of Law, Universitas

Padjadjaran, Jl. Dipati Ukur No. 35, Bandung, Indonesia,

Department of Civil Law, Faculty of Law, Universitas Padjadjaran, Jl. Dipati Ukur No. 35, Bandung, Indonesia,

Keywords: Agreement, Invention, License, Patent, and Profits.

Abstract: Patent is a part of intellectual property. The object of patent shall be an exclusive right granted by the state to

the inventor of his invention in the field of technology for a certain period of time carrying on the invention

himself or giving approval to another party to exercise it. In this case the patent is very encouraging for patents

to be transferred or either because of inheritance, grant, will, written agreement, or other reasons under the

applicable laws and regulations. Licenses are granted by the Patent Holder, either exclusively or non-

exclusively, to a licensee under a written agreement to use a Patent that is still protected within a certain time

period and conditions. The transfer of a Patent whose ownership of the rights also switched, the License

through an agreement is essentially a grant of the right to enjoy the economic benefits of a Patent within a

certain time and condition. The License Agreement may include all or part of the action. The Patent Holder

in this case shall still be entitled to exercise on own Patent, unless otherwise agreed. The license constitutes a

contractual agreement of two business entities granted to a person who holds a license for patents, marks and

other property rights in an exchange of fees or royalties. According to them licenses can also allow for skills,

profits, capital, or other capacity.

1 INTRODUCTION

The advancement of technology and science has

affected many aspects of human life that had never

been imagined before (Ramli 2018, p. 27). In this case

the Patent is a special right under the law granted to

the inventor or by the law of the party entitled to it,

(the Indonesian Patent Law refers to it by the term

Inventor and the term invention is referred to as

Invention the authorities, for new findings in the field

of technology, improvements to existing findings,

new ways of working, or finding new improvements

in the workings, for a certain period of time that can

be applied in the field of industry.

One of the best works on simple community law

is the result of Broinslaw Malinowski's research of

Trobian and Melanesian islands which he later wrote

in a book entitled Crime and Custom in Savage

Society. The analysis of Malinowski can be

interpreted as follows, because thanks to his research

he has proved that the law not only plays a role in

circumstances filled with violence and contradiction,

but the law also plays a role in daily activities. In other

words, Malinowski seeks to diminish the impression

that law is merely compulsion by proposing a vast

system of social control.

It can be concluded that the patent awarded for

ideas in technology as essentially an idea (immateril)

that can be applied in industrial processes.

Technology is basically born of intellectual initiative,

as the work of human intellectuals. Because the birth

has involved energy, time, and cost then technology

has a economic value, which can be the object of

property. In the science of law, which is widely

embraced by other nations, the right to intellectual

thought in the field of technology is recognized as an

intangible property right. These rights are known as

"Patents". To accelerate and increase sales quickly

then by looking at the rapid development of

information technology can take advantage on-line

service in the form of e-Commerce. Many ways that

companies do in the use of information technology.

Many companies use information technology as a

competitive advantage that differentiates it from other

companies in a single market.

Ramli, T., Putri, S. and Ramli, A.

Legal Review of Patent Rights with The License Agreement on Civil Law.

DOI: 10.5220/0010053800300033

In Proceedings of the International Law Conference (iN-LAC 2018) - Law, Technology and the Imperative of Change in the 21st Century, pages 30-33

ISBN: 978-989-758-482-4

According to Law No. 13 of 2016, there are two

types of patents: patents and simple patents. An

ordinary patent is a patent that passes through in-

depth research or development with more than one

claim. Simple patents are patents that do not require

in-depth research or development and contain only

one claim.

Initially, the inception of patents occurred at the

time of the ten original participating countries and the

seven countries (Denmark, Japan, Luxemburg,

Monaco, Montenegro, Norway, and Sweden) who

participated by signing the original manuscript of the

Bern Convention. The background to the convention

as set out in the original Manuscript Preface of

Konvevsi Bern is: "... to be equally animated by the

desi`re to protect, in as effective and uniform a

manner as possible, the right of authors in their

literary and artistic works". Based on the manuscript,

it can be interpreted as a body that has the same life

based on the desire to protect, and the success and

uniformity with attitudes or ways that support by

literary and artistic writers. After the entry into force

of the Bern Convention, which is classified as the

Law-Making Treaty, is open to all non-member

countries, participation as a new member country

shall be conducted by ratifying it and submitting the

ratification texts to the Director General of WIPO.

The license agreement is between the licensor and

the licensee where the licensor grants licensee

permission to use licensor's intellectual property

rights. Licenses granted by licensor to licensee to use

the licensor's HKI accompanied by payment of

remunera`tion in the form of royalty to licensor.

According to Article 1 paragraph (13) of Law No.14

of 2001 on Patents (hereinafter referred to as the

Patent Law of 2001) provides the definition of a

license as a permit granted to another party under an

agreement granting the right to enjoy the economic

benefits of a Patent granted in a period of time and

certain conditions. In this research the problems is:

1 How is the Patent relation in general in the field

of Information Technology?

2 Is there a Patent Redirect process and what is the

difference in general with Patent License?

2 MATERIALS AND METHODS

Method approach used in this paper is the juridical

approach of normative and juridical comparative.

Normative juridical is research by explaining the

provisions in the applicable laws and regulations.

Definition of juridical comparative that is based on

comparison of law. Comparative law with developing

countries, as well as to compare national and

international legal instruments in the field of legal

protection (Soekanto 1986).

3 DISCUSSION

In line with the dynamic human development, the law

should be able to include human development in all

aspects including development in technological

aspects. The presence of the media as a form of

development of human technology in the field of

information technology bring various impacts to the

parties concerned. Entering the 21st century,

communication technology plays an important role in

various sectors of society around the world. The more

developed and the more complex the activities of the

world community, it becomes a line for the

development of technology in the field of

communicatio (Soekanto 1986). Based on this,

communication technology is demanded and leads to

efficiency and can penetrate boundaries of territory

by state borders, without time constraints. One

technology that successfully need the Internet can be

interpreted as a large worldwide computer network

(Lindsey 2006, p. 161), connecting computer users

from one country to another around the world, in

which there are various information resources from

static to dynamic and interactive (Mochtar 2001).

3.1 Differences in Patent Redemption and

Patent License

The existence of a license is an absolute requirement

of a license 18. The grant of a Patent is regulated in

Article 69 of Law No.14 Year 2001 on Patents.

Article 69 Paragraph (1) stipulates that the holder of

a Patent is entitled to grant a License to another party

under a License Agreement to perform the acts as

referred to in Article 16. However, Article 71

Paragraph (1) provides that the License Agreement

shall not contain provisions, directly or indirectly,

which may harm the Indonesian economy or contain

restrictions on mastering and developing technology

in general and relating to the patented invention in

particular. So, it is clear that the permission of the

party entitled and authorized to grant a Patent is an

absolute must be met in order to avoid criminal

sanctions. In this case, this research is aimed to know

the limits of invention that can be listed in Indonesia

and to know the interconnection between inventors in

a finding. Patents as regulated in Article 74

paragraph 1 of Law Number 13 of 2016 concerning

Legal Review of Patent Rights with The License Agreement on Civil Law

Patents may be transferred or transferred in whole or

in part:

a. inheritance;

b. grant;

c. will;

d. waqf;

e. written agreement; or

f. other reasons justified under the terms of

legislation.

The transfer of rights to a Patent must be

accompanied by an original document of Patent and

any other rights relating to the Patent. Any transfer of

rights to a Patent shall be recorded and announced for

a fee. License means a license granted by the Patent

Holder, whether exclusive or non-exclusive, to a

licensee under a written agreement to use a Patent that

is still protected within a specified time period and

condition, in any other case what is meant by an

exclusive License Agreement constitutes an

agreement only provided to one Licensee, and / or

within a certain territory. Meanwhile, a non-exclusive

License Agreement is an agreement that may be

granted to some Licensee and / or in some areas. The

Patent Holder is entitled to grant a License to another

party under either the exclusive or non-exclusive

License Agreement to execute:

1. in the case of Patent-product: make, use, sell,

import, rent, deliver, or provide for sale or lease

or submitted Patented products;

2. in the case of a process Patent: using a Patented

production process to make the goods or other

actions as referred to in part a.

3.2 Patent Relations and Civil Law

The general licensing arrangements in the Patent Law

are contained in the provisions of Articles 69 to 73 of

the Patent Law. The following are the main points of

the arrangement. Article 69 of the Patent Law

stipulates that the patent holder is entitled to grant

licenses to other parties under a license agreement to

perform the act of making, using, selling, importing,

leasing, handing, or providing for sale or lease or

patent product patent. In the case of a process patent,

it uses a patented production process to produce

goods and other measures. Unless otherwise agreed,

the scope of the license covers all the above acts,

during the period of License granted and applies to

the entire territory of the Republic of Indonesia. The

Patent Holder may still exercise his own or grant

licenses to other third parties to perform such acts,

unless otherwise agreed by the parties.

In addition, there are other rules, that the patent

holder may license the permission to others to use the

ideas expressed in the patent, in whole or in part. With

the transfer or transfer of patents to others, the

transfer or transfer of power over the patent. Here the

switch or submitted is only the economic rights alone,

while the moral rights do not participate in the switch

or submitted, because it remains attached to the

Inventornya. A patent as a right granted to a person

on an invention that inverts the step (inevitably) may

be transferred to another person. Understanding the

transfer of rights is the handover of power / power

(over things) to legal entities, people, state (other

parties).

According to the Civil Code, the meaning of

submission is, "the submission of an object by the

owner or on his behalf to another so that the other

person obtains possession of the thing." That

surrender can be distinguished from "real surrender

and juridical surrender". Submission is a clear

transfer of power over a material in a real way,

whereas juridical submission is a legal act in which or

due to which property rights are transferred. The

difference between the two is evident in the

submission of immovable and moving objects. On the

registration of immovable property must be through

registration on a deed in the general register, on the

contrary the handover of the moving objects, meaning

that the surrender of the real and juridical handover is

done.

4 CONCLUSION

The other transfer of a Patent whose ownership of the

rights also transfers, the License through an

agreement is essentially grant of the right to enjoy the

economic benefit of the Patent within a certain time

and condition. intellectual property products such as

copyrights and brands, patents are essentially private

immaterial rights arising from human intellectual

abilities. As a proprietary right, patents may also be

transferred or submitted by the Inventor or by those

entitled to the Invention to an individual or legal

entity. The ideal principle of patent protection is the

same as that of other intellectual property protections

as long as they all intend to protect someone who

finds something for his or her own thoughts and work

not to be used by others and enjoys the results by

forgetting the labor of those who have worked hard,

thinking and spending to get it . When compared to

with a patent, the difference between the two is a form

of copyright by law in principle recognized from the

beginning, and the law regulates in its protection.

While the patent is a right granted by the state to a

iN-LAC 2018 - International Law Conference 2018

person who discovers something in the field of

technology that can be applied in the field of industry,

to the sole exclusive person who finds it through the

work or fruit of the work, and others are prohibited

from using it, except with the permission of the patent

owner.

ACKNOWLEDGEMENT

This paper is based on research granted by

Universitas Padjadjaran, of Academic Leadership

Grant, under the facilitation of Faculty of Law and

supervised by Department of Technologi Information

Comunication and Intellectual Property.

REFERENCES

Ahmad M Ramli, Copyright, Digital Disruption of Creative

Economy, Bandung, PT. Alumni, 2018.

Dewi Astutty Mochtar, License Agreement on Technology

Transfer in the Development of Indonesian

Technology, Alumni, Bandung, 2001.

Soerjono Soekanto, Introduction to Legal Research, UI-

Press, Jakarta, 1986.

Tim Lindsey, Introduction to Intellectual Property Rights,

PT Alumni, Bandung, 2006.

Tymutz. 2009. Information Technology for Competitive

Advantage in Company Operations.

Legal Review of Patent Rights with The License Agreement on Civil Law